Trademarks

Introduction

The Trademark Act [http://www.tipo.gov.tw/eng/laws/tmlaw-e.asp] is the official body of law concerning the protection of trademarks in Taiwan. Amendments to the Trademark Act were infrequent until the 1980s and 1990s, when Taiwan's economic base shifted from small electronics and textile manufacturing to high tech production. When Taiwan joined the WTO, it made a commitment to comply with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) in 2002.  In 2003, Taiwan amended its Trademark Act to further enhance trademark protection.

Companies can register their marks and/or logos with the Taiwan Intellectual Property Office (TIPO) under the Ministry of Finance. Chinese-language representations and Internet domains should also be registered.

Taiwan operates a "first to file" trademark examination and registration system. When two applications have been filed for similar or identical trademarks, the first application filed will be considered for approval. This does not apply to international "well-known" trademarks such as major brands with trademarks registered in other countries. However, owners of well-known trademarks may want to seek further protection by registering their marks in Taiwan.

Patent Coverage

Taiwan's Trademark Act allows trademark applications for words, figures, symbols, colors, sounds, three-dimensional shapes or a combination thereof. Taiwan recognizes four types of trademarks according to purpose of use. Companies may register the following types of trademarks in Taiwan:

• Trademarks are used by the registrant to identify his/her own goods and services.
• Certification marks are described under Article 72 as "marks used to certify the characteristics, quality, precision, place of origin or other matters of another person's goods or services."  For example, an "Idaho Potatoes" seal on a sack of potatoes indicates the place of origin of the product.
• Collective membership marks are used exclusively by a business association, social organization, or any other group to identify its organization or membership. They are not used to identify goods and services, but rather to identify the group itself or its members. For example, a political party could apply for a collective membership mark to identify its membership.
• Collective trademarks are marks or symbols used exclusively by a business association, social organization, or any other group to mark or identify the goods or services provided by its members and therefore distinguishing these goods or services from those provided by others. A woodworking association, for example, could use a collective trademark to identify products made by its members.

The Trademark Act states that a trademark "shall be distinctive enough for relevant consumers of the goods or services to recognize it as identification of those goods or services and to differentiate such goods or services from those offered by others." It also explains "the use of a trademark connotes the utilization for marketing purposes of the trademark on goods, services, or relevant articles thereof, or the utilization through means of two-dimensional graphics, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark."

Under the Trademark Act, the following may not be registered as trademarks:

• Symbols that fail to comply with the provisions of Article 5;
• Generic signs or terms used in relation to the designated goods or services;
• Symbols that are identical or similar to a well-known international organization or a well-known domestic or foreign institution;
• Symbols that are likely to mislead the public with respect to the nature, quality, or place of origin of the goods or services;
• Marks that comprise a portrait, a famous name, pseudonym or alias of another person;


Trademark Application and Registration Process

The following information provides an overview of the process and requirements for registering a trademark in Taiwan. However, it should be used only as a general guide to the registration process. Because trademark applications can be complicated, applicants are highly encouraged to consult a Taiwan-based law firm specializing in trademark registration before filing an patent application. Furthermore, the Intellectual Property Office (IPO) under the Ministry of Finance has an excellent FAQ on trademark registration in Taiwan [http://www.tipo.gov.tw/eng/howto/procedures-t.asp], which should be reviewed before beginning the application process.

Step 1: Determine Registration Eligibility

For general information, refer to the Patent Coverage section above. It is also necessary to perform a search of the Trademark Gazette to determine whether similar or identical trademarks have already been registered.

Step 2: Prepare Application Materials and Pay Application Fees

Trademark applications must include the following:

• Application form specifying the name and address of the applicant, the proposed trademark, the class of the designated goods/services and the names of the goods/services;
• Clear trademark representations;
• Payment for application fees;
• Power of Attorney -- Required if a trademark agent has been appointed. If power of attorney is in a foreign language, a Chinese translation must also be provided.
• The application must be signed or sealed. If a trademark agent is appointed, the application may be signed or sealed by the trademark agent only.

Taiwan uses the International Classification of Goods system, which categorizes commodities and services into 42 classes with sub-classes. A trademark must be registered in connection with at least one particular class of goods or services. It is often a good idea to register your mark in classes of products you may produce or sell in the future, or where there is room for consumer confusion.

The application form can be downloaded free of charge from TIPO's website (at http://www.tipo.gov.tw/trademark/trademark_table_register.asp), or can be purchased at the Counter located on the 4th floor of TIPO at NT$15 per copy (tel: (02)23767164, 23767165), or by postal remittance to the account "the Intellectual Property Office of the Ministry of Economic Affairs". Applications are divided into four different categories, namely, trademark, collective trademark, certification mark, collective membership mark, with each having the following types of application forms:

    * general trademark application
    * color trademark application
    * sound trademark application
    * three-dimensional trademark application

Attach five copies depicting the trademark to be registered and provide two additional black and white copies if submitting an application for a colored trademark. Guidelines for color applications, sound trademark applications and three-dimensional trademark applications are available online. All requisite application fees must be submitted with the application.

Step 3: Perform a Pre-application Trademark Search

A preliminary trademark search is necessary to ensure that there is no prior conflicting registration. Taiwan keeps a public record of all registered trademarks that may be accessed online or through the Trademark Gazette. Note that trademarks that are "likely to cause confusion" among consumers may not be registered. In April 2004, Taiwan promulgated examination guidelines to clarify this concept.

Step 4: File a Claim for Trademark Priority (if applicable)

Nationals of all WTO member states are allowed to claim trademark priority in Taiwan. To receive trademark priority status in Taiwan, applicants must clearly state a claim to priority status within six months of the original filing date in the WTO member country. Any claim to priority status must be made at the time of filing the initial trademark application in Taiwan. Within three months of submitting their trademark application in Taiwan, applicants must also submit a certified copy of the accepted application to maintain a claim to priority status.

Step 5: Trademark Agent or Applicant Submits Application to TIPO Office

The filing date is the date on which the application was submitted to the TIPO office or the postmark date on which the application materials were mailed.

Step 6: TIPO Trademark Registrar Review

The Trademark Registrar will review the trademark application materials to ensure that they are complete and comply with the application requirements, and that the trademark meets the criteria for registration.

If the Trademark Office determines that the application packet is complete and no other similar or identical trademark has been previously registered, the Trademark Registrar will grant approval and register the trademark in the Trademark Gazette after receiving registration fees.  The trademark is subject to public opposition for a period of three months.

If the Trademark Registrar decides to reject the application, it must notify the applicant in writing and state the reasons for rejection.  Within thirty days of receipt of rejection notification, an applicant may seek an administrative appeal through TIPO.  TIPO will then review the application and render a decision.  If an applicant is dissatisfied with the appeal decision, it may file an administrative suit in the Taipei High Administrative Court.

Step 7: Pay Registration Fees

TIPO will not publish a trademark's registration until all requisite registration fees have been paid. Payments can be made 1) in a lump sum within two months of receipt of notification of trademark approval or 2) in two installments, the first payment due within two months and the second within three months of notification of trademark approval. If fees are not received on time, the original trademark approval will be cancelled. Fee schedules are available from TIPO [http://www.tipo.gov.tw/eng/howto/fee-t.asp].

Step 8: Publication of registered trademark

After receiving the registration fees, TIPO will publish the registered trademark in the Trademark Gazette. The trademark will remain registered for a term of ten years. To renew a trademark, applicants must file a request for renewal within six months before or after the trademark's expiration date. Note that a trademark must remain in use to maintain registered status.

E-mail this page.